`ESTTA1077448
`08/25/2020
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated application.
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`Opposer Information
`
`Name
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`Hormel Foods, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`08/26/2020
`
`1 HORMEL PLACE
`AUSTIN, MN 55912
`UNITED STATES
`
`Attorney informa-
`tion
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`SARAH NELSEN
`HORMEL FOODS CORPORATION
`1 HORMEL PLACE
`AUSTIN, MN 55912
`UNITED STATES
`Primary Email: slnelsen@hormel.com
`Secondary Email(s): slnelsen@hormel.com
`5074375936
`
`Docket Number
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`Applicant Information
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`Application No.
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`88450758
`
`Publication date
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`04/28/2020
`
`Opposition Filing
`Date
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`Applicant
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`08/25/2020
`
`Opposition Peri-
`od Ends
`
`08/26/2020
`
`Wayne Farms LLC
`4110 CONTINENTAL DRIVE
`OAKWOOD, GA 30566
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 029. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Uncooked boneless skinless chicken breast
`fillets with and without rib meat, chicken tenderloins, whole and split chicken wings, all of the forego-
`ing sold by the case and in bulk
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
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`Trademark Act Section 2(d)
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`Marks Cited by Opposer as Basis for Opposition
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`U.S. Registration
`No.
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`2334008
`
`Application Date
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`01/14/1999
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`
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`Registration Date
`
`03/21/2000
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`Foreign Priority
`Date
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`NONE
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`Word Mark
`
`Design Mark
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`Description of
`Mark
`
`Goods/Services
`
`ALWAYS TENDER
`
`NONE
`
`Class 029. First use: First Use: 1999/10/04 First Use In Commerce: 1999/10/04
`beef
`
`U.S. Registration
`No.
`
`3038712
`
`Registration Date
`
`01/10/2006
`
`Application Date
`
`06/07/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ALWAYS TENDER
`
`NONE
`
`Class 029. First use: First Use: 1996/12/11 First Use In Commerce: 1996/12/11
`pork [ and beef ]
`
`U.S. Registration
`No.
`
`3923590
`
`Registration Date
`
`02/22/2011
`
`Application Date
`
`08/22/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`ALWAYS TENDER
`
`The mark consists of the wording "ALWAYS TENDER"; beneath the wording
`"ALWAYS" is a curved line; a wavy line depicting steam appears beneath the
`wording "TENDER" and behind the letters "N", "D" and "E" in the word
`"TENDER".
`
`Goods/Services
`
`Class 029. First use: First Use: 2009/11/29 First Use In Commerce: 2009/11/29
`Meat
`
`Attachments
`
`ALWAYSTENDEROPPOSITION.pdf(391156 bytes )
`
`Signature
`
`/sln/
`
`Name
`
`Date
`
`SARAH NELSEN
`
`08/25/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`NOTICE OF OPPOSITION
`
`
`88/450,758
`
`
`
`In re Application Serial No.:
`
`For the Mark:
`
`100% FARM RAISED LADYBIRD PREMIUM
`CHICKEN ALWAYS TENDER
`
`May 29, 2019
`
`April 28, 2020
`
`
`
`
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`Opposition No._______________
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`Filed:
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`Publication in the Trademark
`Official Gazette On:
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`Hormel Foods, LLC
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`Opposer,
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`v.
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`Wayne Farms, LLC
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`Applicant.
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`Hormel Foods, LLC, a Minnesota limited liability company (“Opposer”) believes it
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`NOTICE OF OPPOSITION
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`will be damaged by the registration of the 100% FARM RAISED LADYBIRD PREMIUM
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`CHICKEN ALWAYS TENDER mark in International Class 29 and hereby opposes the
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`same.
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`
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`The grounds for this opposition are as follows:
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`
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`1.
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`Applicant Wayne Farms, LLC (“Applicant”) seeks to obtain registration on
`
`the principal register of the trademark 100% FARM RAISED LADYBIRD PREMIUM
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`CHICKEN ALWAYS TENDER for “uncooked boneless skinless chicken breast fillets with
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`and without rib meat, chicken tenderloins, whole and split chicken wings, all of the
`
`foregoing sold by the case and in bulk” in International Class 29. The application is an
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`intent to use application pursuant to Section 1(b) of the U.S. Trademark Act, 15 U.S.C. §
`
`1051(b).
`
`2.
`
`Upon information and belief, Applicant is a Delaware limited liability
`
`company, with its principal place of business at 4110 Continental Drive, Oakwood, Georgia,
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`30566.
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`3.
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`Opposer is a limited liability company organized and existing under the laws
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`of the State of Minnesota, with its principal place of business at 1 Hormel Place, Austin,
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`Minnesota 55912. Opposer owns federal trademark registrations for the ALWAYS
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`TENDER trademark (“Opposer’s Mark”) for “beef” used in commerce since October 04,
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`1999, Registration No. 2,334,008; “pork” used in commerce since December 11, 1996
`
`Registration No. 3,038,712; and “meat” used in commerce since November 29, 2009 as
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`Registration No. 3923590 all attached hereto and incorporated by reference as Exhibit A.
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`4.
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`Opposer’s Mark is distinctive. Moreover, through its use in interstate
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`commerce, including substantial advertising and promotion by Opposer or its affiliates, and
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`has developed and represents valuable goodwill to the benefit of Opposer. Opposer’s Mark
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`has trademark significance to purchasers and potential purchasers.
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`2
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`5.
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`Opposer’s rights in Opposer’s Mark are prior to the date of filing of
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`Applicant’s Intent to Use application and any use of 100% FARM RAISED LADYBIRD
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`PREMIUM CHICKEN ALWAYS TENDER by Applicant.
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`6.
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`Due in primary part of Applicant’s use of ALWAYS TENDER , as part of its
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`mark, and the similar nature of the goods and services of the respective parties, customers
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`and potential customers are likely to believe that Applicant’s goods under Applicant’s mark
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`originate from or are sponsored by or affiliated or connected with Opposer or Opposer’s
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`products, resulting in a likelihood of confusion in the marketplace and damage to Opposer.
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`7.
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`Registration of the mark 100% FARM RAISED LADYBIRD PREMIUM
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`CHICKEN ALWAYS TENDER by Applicant is likely to cause confusion, mistake, or
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`deception, causing damage to Opposer under Section 13 of the U.S. Trademark Act, 15
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`U.S.C. § 1063.
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`WHEREFORE, Opposer asks that the opposition to this application be sustained and
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`that the registration of the term 100% FARM RAISED LADYBIRD PREMIUM CHICKEN
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`ALWAYS TENDER be refused.
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`Respectfully submitted,
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`/sln/
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`___________________________________
`
`Sarah L. Nelsen
`
`Hormel Foods, LLC
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`3
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`Exhibit A
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`TESS was last updated on Tue Aug 25 02:28:23 EDT 2020
`
`
`ALWAYS TENDER
`IC 029. US 046. G & S: beef. FIRST USE: 19991004. FIRST USE IN COMMERCE:
`19991004
`(1) TYPED DRAWING
`75620686
`January 14, 1999
`1A
`1B
`
`November 12, 1999
`2334008
`March 21, 2000
`(REGISTRANT) HORMEL FOODS, LLC LIMITED LIABILITY COMPANY
`MINNESOTA 1 Hormel Place Austin MINNESOTA 559123680
`Sarah L. Nelsen
`2122566
`TRADEMARK
`SUPPLEMENTAL
`SECT 8 (6-YR). SECTION 8(10-YR) 20100322.
`1ST RENEWAL 20100322
`LIVE
`
`
`
`Word Mark
`Goods and Services
`
`Mark Drawing Code
`Serial Number
`Filing Date
`Current Basis
`Original Filing Basis
`Date Amended to
`Current Register
`Registration Number
`Registration Date
`Owner
`
`Attorney of Record
`Prior Registrations
`Type of Mark
`Register
`Affidavit Text
`Renewal
`Live/Dead Indicator
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`4
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`ESS was last updated on Tue Aug 25 02:28:23 EDT 2020
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`Word Mark
`ALWAYS TENDER
`Goods and Services IC 029. US 046. G & S: pork [ and beef ]. FIRST USE: 19961211. FIRST USE IN
`COMMERCE: 19961211
`Mark Drawing Code (1) TYPED DRAWING
`Serial Number
`76268066
`Filing Date
`June 7, 2001
`Current Basis
`1A
`Original Filing Basis 1A
`Published for
`December 11, 2001
`Opposition
`Registration
`Number
`Registration Date
`Owner
`
`January 10, 2006
`(REGISTRANT) HORMEL FOODS, LLC LIMITED LIABILITY COMPANY MINNESOTA
`1 Hormel Place Austin MINNESOTA 55912
`Attorney of Record Sarah L. Nelsen
`Prior Registrations 2122566;2334008
`Type of Mark
`TRADEMARK
`Register
`PRINCIPAL-2(F)
`Affidavit Text
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20160223.
`Renewal
`1ST RENEWAL 20160223
`Live/Dead Indicator LIVE
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`3038712
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`TESS was last updated on Tue Aug 25 02:28:23 EDT 2020
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`ALWAYS TENDER
`IC 029. US 046. G & S: Meat. FIRST USE: 20091129. FIRST USE IN COMMERCE:
`20091129
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`
`
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`Word Mark
`Goods and
`Services
`Mark Drawing
`Code
`Design Search
`Code
`
`01.15.05 - Smoke; Steam; Vapor
`26.17.02 - Bands, wavy; Bars, wavy; Lines, wavy; Wavy line(s), band(s) or bar(s)
`26.17.09 - Bands, curved; Bars, curved; Curved line(s), band(s) or bar(s); Lines, curved
`Serial Number 77553236
`Filing Date
`August 22, 2008
`Current Basis
`1A
`Original Filing
`1B
`Basis
`Published for
`Opposition
`Registration
`Number
`Registration
`Date
`Owner
`
`March 31, 2009
`
`3923590
`
`February 22, 2011
`
`(REGISTRANT) Hormel Foods, LLC LIMITED LIABILITY COMPANY MINNESOTA Law
`Department 1 Hormel Place Austin MINNESOTA 55912
`
`Attorney of
`Record
`Prior
`Registrations
`Disclaimer
`
`Description of
`Mark
`
`Type of Mark
`Register
`Affidavit Text
`Live/Dead
`Indicator
`
`
`
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`Sarah L. Nelsen
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`2334008;3005463;3046559;AND OTHERS
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "ALWAYS TENDER" APART
`FROM THE MARK AS SHOWN
`Color is not claimed as a feature of the mark. The mark consists of the wording "ALWAYS
`TENDER"; beneath the wording "ALWAYS" is a curved line; a wavy line depicting steam
`appears beneath the wording "TENDER" and behind the letters "N", "D" and "E" in the word
`"TENDER".
`TRADEMARK
`PRINCIPAL
`SECT 15. SECT 8 (6-YR).
`
`LIVE
`
`6
`
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